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Generic Top Level Domain Name (gTLD) Decisions |
Claim No. FA103926
The Complainant is The
American National Red Cross of 430 17th Street N.W., Washington D.C.
20006, USA. The Complainant is
represented by James L. Bikoff, Silverberg, Goldman & Bikoff, LLP of 1101
30th Street N.W., Suite 120, Washington D.C. 20007, USA.
The Respondent is
Leonard Habersham of P.O. Box 29587 of Baltimore, Maryland 21216.
The domain name at
issue is <americanredcross.info>, registered with InnerWise, Inc. d/b/a ItsYourDomain.com of 1005 West
Wise Road, Suite 200, Schaumberg, IL 60193, USA.
The undersigned
certifies that he has acted independently and impartially and to the best of
his knowledge, has no known conflict
in serving as Panelist in this proceeding.
The
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) on January 21, 2002. The domain
name dispute is governed pursuant to the Uniform Domain Name Dispute Resolution
Policy (“the Policy”), adopted by the Internet
Corporation for Assigned Names
and Numbers (“ICANN”).
The Complainant
elected to have the dispute decided by a one member Administrative Panel.
In
accordance with Rules, Paragraph 4(c), the formal date of commencement of this
administrative proceeding is January 23, 2002.
Supplemental materials submitted February 18, 2002, as reflected by some
statements hereinafter, were received in evidence and considered.
The
Complainant requests that the domain name <americanredcross.info>
be transferred from the Respondent to the Complainant.
The Complainant is The
American National Red Cross, which was originally founded by Clara Barton on
May 21, 1881, as the American
Association of the Red Cross. It was created to served the United States
during times of peace and war by providing disaster relief, emergency aid,
first aid training
programs, and humanitarian assistance.
The Respondent, Mr.
Leonard Habersham, filed a Response to the Complainant’s Complaint but failed
to supply any information about
itself in the Response.
The Complainant owns
U.S. Trademark and Service Mark Registration for the AMERICAN RED CROSS
mark. The United States Patent and
Trademark Office (“USPTO”) has assigned the special designation number
89-000,081 in the USPTO database. A
copy of the special designations was annexed to the Complaint.
Complainant contends
that the American Red Cross has long used American Red Cross and the Red Cross
(“the Red Cross” marks) as its
service marks and trademarks in connection with
humanitarian services, disaster relief, and educational programs.
Complainant contends
that the disputed domain name is identical to its registered “AMERICAN RED
CROSS” trademark and trade name, and
incorporates the registered AMERICAN RED
CROSS trademark in its entirety.
Complainant owns and
maintains a number of web sites, including web sites containing the Red Cross
marks, e.g., <Americanredcross.com>,
<Americanredcross.net>,
<Americanredcross.org> and <Redcross.org>.
The Complainant
annexed to the Complaint two federal criminal statutes, enacted by Congress to
protect the famous Red Cross marks
and the Red Cross emblem. 18 U.S.C. § 706 and 18 U.S.C. § 917. The Anitcybersquatting Consumer Protection
Act, 15 U.S.C. 1125(d)(1)(A)(I)(III), also specifically protects the Red Cross
marks.
The American Red Cross
marks and emblem has been assigned the special designation numbers 89-000,081
in the USPTO database pursuant
to Article 6ter of the Paris Convention. The Complainant also owns U.S. Trademark and
Service Mark Registration No. 1,697,594 which contains the words AMERICAN RED
CROSS,
the Red Cross emblem and a whale design.
Complainant contends
that Respondent, Leonard Habersham, registered <americanredcross.info>
on October 9, 2001. The Complainant
contends they sent two cease and desist letters to the Respondent and received
no response.
On October 15, 2001,
the Respondent filed an intent-to-use (“ITU”) trademark application for <americanredcross.info>
with the USPTO for “providing information about web hosting resources via a web
page on a global computer network.”
Complainant contends
that the Respondent has no legitimate interests in the contested domain
name. The Complainant contents that the
Respondent is not affiliated with The American Red Cross, is not a
grandfathered user of the words
“Red Cross,” and not authorized to register or
use domain names or marks containing the Red Cross marks. The Complaint also contends that the
Respondent is not commonly know as the “American Red Cross” and that the intent
to use trademark
application filed by the Respondent demonstrates his intended
commercial use of the domain name for web hosting services.
The Complainant
contends that the Respondent has registered the contested domain name in bad
faith, by creating a likelihood of confusion
with the Red Cross marks as to
source, sponsorship, affiliation, or endorsement. The Complainant contends, Respondent is a Baltimore, Maryland
resident and an American citizen, therefore, he must have been aware
of the
fame of the Red Cross marks. The
Complainant also contends that the Respondent’s registration of the domain name
trades upon the reputation and goodwill associated
with the AMERICAN RED CROSS
mark.
The Respondent has
failed to develop a web site at <americanredcross.info>. The Complainant also contends that the
Respondent refused to voluntarily transfer the Domain Name by failing to
respond to two cease
and desist letters.
Respondent
claims that although The American Red Cross has owned
<Americanredcross.com>, <.net>, and <.org> since
2000, it has
not developed an active web site for <Americanredcross.com>,
<.net>, or <.org>.
Respondent contends he
has a “trademark live and ready for use of hosting the web site of others on a
computer server for global computer
networks.”
Respondent plans to do business under the name <americanredcross.info>
for web hosting purposes.
Respondent contends
the Complainant has yet to develop an active web site for
<Redcross.info>.
Respondent contends
that he has not acted out of bad faith, not used any types of Red Cross
emblems, nor posed to be a member or agent
of The American National Red
Cross.
Respondent
contends that The American National Red Cross acquired the domain name
<Redcross.info> on August 28, 2001.
Therefore, the American National Red Cross was aware of the .info domain
name.
Respondent contends
the Complainant is using the Uniform Domain Name Resolution Policy (“UDRP”) for
the purpose of reverse domain
name hijacking the domain name <americanredcross.info>.
Respondent contends he
is not acting in bad faith by passive holding <americanredcross.info>
and just because he has not developed an active web site does not demonstrate
that he does not intend to use <americanredcross.info> in a timely
manner.
Respondent did not
register the domain name until October 9, 2001, nine days after the .info top
level domain was made available for
real time registration on October 1, 2001.
The
American National Red Cross submitted a reply in accordance with the Forum
Supplemental Rule 7 on February 15, 2002.
Complainant
contends the American Red Cross has no obligation to send communications to the
Respondent concerning his improper registration
of a domain name containing a
famous mark.
Complainant
contends the American Red Cross has acted in good faith throughout this domain
name dispute and used every available means
to contact the Respondent,
including email, postal address and Respondent’s post office box.
Complainant
contends the American Red Cross is authorized under 18 U.S.C. § 706 to protect
the Red Cross marks from infringement and
misuse. The American Red Cross exclusive rights are protected under the
Anticybersquatting Consumer Protection Act.
Respondent’s
domain name contains the protected AMERICAN RED CROSS trademark in its
entirety. The American Red Cross has
long standing common law and statutory rights in the American Red Cross name,
emblem, and the mark since
at least approximately 1881 and congressional
protection since 1905.
ii)
Absence
of Rights or Legitimate Interests of the Respondent in the Domain Name
The Respondent has not
shown any use of, or demonstrable preparations to use the domain name in
connection with the bona fide offering
of goods and services. Nor has the Respondent shown that it has
been commonly known by the domain name.
In addition, the Respondent has not shown that it is making a legitimate
non-commercial use or fair use of the domain name without
intent for commercial
gain.
The Respondent has
failed to show any evidence of harassment by the Complainant or rights or
legitimate interests in the disputed
domain name to warrant a finding of
reverse domain name hijacking. To
establish reverse domain name hijacking “the respondent must show knowledge on
the part of the complainant of the respondent’s
right or legitimate interest in
the disputed domain name and evidence of harassment or similar conduct by the complainant
in face
of such knowledge.” See Sydney Opera House Trust v. Trilynx Pty
Limited, WIPO Case D2000-1224 (October 31, 2000). Respondent has not shown that a legal right has matured in him
nor that Complainant recognized or was aware of any right of Respondent
in
either of the “Red Cross” marks.
The Panel finds that
the Respondent has no rights or legitimate interests in respect of the domain
name and that the conditions for
the second element have been satisfied.
iii)
Registration
and Use of the Domain Name in Bad Faith
The Panel finds there
is no logical explanation for the choice of <americanredcross.info>
as a domain name, except to pretend a false association with Complainant, of
some activity or persons NOT affiliated with Complainant,
using the domain name
as its tool to deceive members of the public with the registered service mark
AMERICAN RED CROSS of the Complainant.
While the Respondent
has not activated the disputed domain name, the very existence of the web site
under the domain name constitutes
a passive use of the domain name. Numerous decisions have held that passive
holding of a domain name constitutes bad faith.
The evidence offered
by the Complainant from the WhoIs database listing for
<DomainMerchants.com>, a domain name reseller, states
the domain name is
owned by the “Professional Association of Computer Experts,” with an
administrative billing contact as mrslydogg@home.com. The Respondent’s email address used for the registration of <americanredcross.info>
is also mrslydogg@home.com. Therefore,
the list of domain names under the control of mrslydogg@home.com and
information available on <Domainmerchants.com>
demonstrates Respondent is
a sophisticated Internet user who is a domain name reseller who acted in bad
faith.
The Panel concludes
that the domain name in dispute has been registered and is being used in bad
faith.
The conditions for the
third element are therefore satisfied.
In the result, the
Panel has found that the domain name registered by the Respondent is
confusingly similar to the trademark in which
the Complainant has rights, that
the Respondent has no rights or legitimate interests in respect of the domain
name, and that the
domain name has been registered and is being used in bad
faith. The Complainant’s cause is just
and proper; the Respondent has not meaningfully rebutted it.
Accordingly, the Panel
directs the registration of the domain name <americanredcross.info>
to be transferred by Respondent to the Complainant.
Tom
Arnold
Dated: March
6, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/348.html